DETAILED ACTION
Status of Claims
This action is in reply to amendment and response filed on 5/28/25. Claims 1, 5-7 and 9 were amended. Claim 8 was cancelled. Claims 1-7 and 9 are pending and examined.
Response to Amendments and Arguments
101: The Applicant’s amendments and arguments have been fully considered but are not persuasive.
Applicant essentially argues that the amended claims do not recite an abstract idea.
The Examiner disagrees.
The Applicant’s arguments are moot because the claims were amended substantively. Per example, the amended claim 1 recites “a machine-learning model stage that inputs the discovery parameters into a trained machine-learning model and selects an entity …” which is an additional element that necessitates reconsideration of the claims.
As such, an updated rejection is provided that addresses the amended claims.
Claim Interpretation – 35 USC 112(f)
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“an inference mapping stage that queries …” in claim 1,
“a temporal logic stage that correlates …” in claim 1,
“a data warehouse mining stage that queries … to heuristically match and filter … to retrieve …” in claim 1,
“a machine learning model stage that inputs …” in claim 1,
“execute … if the inference mapping stage fails to identify …, … if the temporal logic fails to identify …, … if the data warehouse mining stage fails to identify …” in claim 9.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-7 and 9 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
In the instant case, claims 1-7 and 9 are directed to an apparatus.
When analyzed under prong one of step 2A, see MPEP 2106.04(a), claim 1 recites retrieving data utilizing a mathematical algorithm which is a form of organizing human activity (e.g. commercial or legal interaction, managing personal behavior or relationships or interactions between people) and an abstract idea, see MPEP 2106.04(a)(2)(II). Specifically, the claim recites:
… store … and the entity discovery model;
… the entity discover model, … requesting an identity of an entity;
…;
access one or more discovery parameters from …;
… identify the entity, the entity discovery model comprising a plurality of discovery stages in which subsequent discovery stages, …, each attempt to identify the entity after a prior discovery stage fails to identify the entity, wherein the plurality of discovery stages comprises:
… queries a mapping datastore to match an … entity identifier with an … entity identifier based on pre-modeled entity relationships, which is more deterministic than subsequent stages based on direct matching of the pre-modeled entity relationships, yielding the same results for the same inputs;
… correlates historical alert datasets with transactional refund records occurring within a defined time window, using timestamp-based queries to infer the entity's identity, which is less deterministic than the inference mapping stage but more deterministic than later stages based on time-bound correlation of the historical alert datasets and the transaction refund records;
… queries … using a merchant entity identifier or descriptor to heuristically match and filter data records by entity code and descriptor match to retrieve an associated entity identifier, which is more probabilistic than the temporal logic stage because of potential ambiguity in the data and variable record associations;
… inputs the discovery parameters into a … model and selects an entity based on a predicted probability exceeding a configurable threshold, wherein the output is probabilistic because the selection is based on the predicted probability;
generate an entity discovery result based on whether any of the plurality of discovery stages discovered the identity of the entity.
When analyzed under prong 2 of step 2A, see MPEP 2106.04(d), claim 1 includes additional elements. The additional elements are:
a “system” comprising,
“a memory configured to store one or more instructions …”,
“an entity discovery API to receive an API call for interfacing with …, the API call …”;
“a processor coupled to the memory and programmed to execute the instructions to”,
“execute the entity discovery model based on the one or more discovery parameters to … after an initial discovery stage to execute, …”,
“an inference mapping stage that …”,
“out-of- network”,
“in-network”,
“a temporal logic stage that …”,
“a data warehouse mining stage that …”,
“a remote data warehouse”,
“a machine-learning model stage that …”,
“trained machine-learning model”,
“transmit the entity discovery result responsive to the API call”.
The additional elements represent use of a computer as a tool to perform the abstract idea, see MPEP 2106.05(f) and/or do no more than link the use of the abstract idea to a particular technological environment or field of use (see MPEP 2106.05(h) and therefore, do not integrate retrieving data utilizing a mathematical algorithm into a practical application, (see MPEP 2106.04(d).
With respect to “transmit the entity discovery result responsive to the API call”, this is no more than transmitting information such as the entity discover result and it has been held that using a computer to perform an economic or other task does not provide a practical application (MPEP 2106.05(f)(2)).
When analyzed under step 2B, see MPEP 2106.05, the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception, itself because the additional elements do no more than automate or implement retrieving data utilizing a mathematical algorithm and do not improve computer functionality or improve another technology or related technical field, see MPEP 2106.05(a).
Hence, claim 1 is not patent eligible.
Dependent claim 2 recites “wherein the one or more discovery parameters comprise a merchant descriptor, and the entity to be identified is an acquirer entity that submits … authorization requests to … on behalf of a merchant entity described by the merchant descriptor”, and therefore, further describes the abstract idea of retrieving data utilizing a mathematical algorithm.
The additional elements of “electronic authorization request” and “a payment network” represent use of a computer as a tool to perform the abstract idea, see MPEP 2106.05(f), and/or do no more than link the use of the abstract idea to a particular technological environment or field of use, see MPEP 2106.05(h), and therefore, do not integrate retrieving data utilizing a mathematical algorithm into a practical application, see MPEP 2106.04(d).
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception, itself because the additional elements do no more than automate or implement retrieving data utilizing a mathematical algorithm and do not improve computer functionality or improve another technology or related technical field, see MPEP 2106.05(a).
Dependent claim 3 recites “…” and “initiate entity discovery … to identify the acquirer entity to act as a relay entity to relay an electronic alert message to the merchant entity”, and therefore, further describes the abstract idea of retrieving data utilizing a mathematical algorithm.
The additional elements of “determine that the merchant entity described by the merchant descriptor is not onboarded to receive alerts” and “… based on execution of the entity discovery model …” represent use of a computer as a tool to perform the abstract idea, see MPEP 2106.05(f), and/or do no more than link the use of the abstract idea to a particular technological environment or field of use, see MPEP 2106.05(h), and therefore, do not integrate retrieving data utilizing a mathematical algorithm into a practical application, see MPEP 2106.04(d).
With respect to “determine that the merchant entity described by the merchant descriptor is not onboarded to receive alerts”, the claim lacks technological details on what “determine that the merchant entity … is not onboarded to receive alerts” comprises, and as a result is no more than “apply it” (MPEP 2106.05(f)(1)).
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception, itself because the additional elements do no more than automate or implement retrieving data utilizing a mathematical algorithm and do not improve computer functionality or improve another technology or related technical field, see MPEP 2106.05(a).
Dependent claim 4 recites “identify, during the inference mapping stage, a mapping between the merchant descriptor and the acquirer entity, the mapping having been generated based on a modeled relationship between the merchant entity and the acquirer entity”, and therefore, further describes the abstract idea of retrieving data utilizing a mathematical algorithm.
Dependent claim 5 recites “identify the acquirer entity based on the merchant descriptor and one or more time-bound data records comprising the merchant descriptor and an identifier of the acquirer entity”, and therefore, further describes the abstract idea of retrieving data utilizing a mathematical algorithm.
Dependent claim 6 recites “access … comprising authorization data of …”, “query one or more data structures of … to access one or more data records that associate the merchant descriptor with the acquirer entity” and “identify the acquirer entity based on the one or more data records”, and therefore, further describes the abstract idea of retrieving data utilizing a mathematical algorithm.
The additional elements of “a remote data warehouse”, “a payment network” represent use of a computer as a tool to perform the abstract idea, see MPEP 2106.05(f), and/or do no more than link the use of the abstract idea to a particular technological environment or field of use, see MPEP 2106.05(h), and therefore, do not integrate retrieving data utilizing a mathematical algorithm into a practical application, see MPEP 2106.04(d).
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception, itself because the additional elements do no more than automate or implement retrieving data utilizing a mathematical algorithm and do not improve computer functionality or improve another technology or related technical field, see MPEP 2106.05(a).
Dependent claim 7 recites “… identify the acquirer entity based on the merchant descriptor”, and therefore, further describes the abstract idea of retrieving data utilizing a mathematical algorithm.
The additional elements of “execute a machine-learning model trained to …” represent use of a computer as a tool to perform the abstract idea, see MPEP 2106.05(f), and/or do no more than link the use of the abstract idea to a particular technological environment or field of use, see MPEP 2106.05(h), and therefore, do not integrate retrieving data utilizing a mathematical algorithm into a practical application, see MPEP 2106.04(d).
With respect to “execute a machine-learning model trained to …”, it merely describes automation or implementation of the abstract idea and, therefore, are not sufficient to provide a practical application (MPEP 2106.05(f)).
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception, itself because the additional elements do no more than automate or implement retrieving data utilizing a mathematical algorithm and do not improve computer functionality or improve another technology or related technical field, see MPEP 2106.05(a).
Dependent claim 9 recites additional elements.
The additional elements of “execute the temporal logic stage after the inference mapping stage if the inference mapping stage fails to identify the entity, the data warehouse mining stage after the temporal logic stage if the temporal logic stage fails to identify the entity, and the machine-learning model stage after the data warehouse mining stage if the data warehouse mining stage fails to identify the entity” represent use of a computer as a tool to perform the abstract idea, see MPEP 2106.05(f), and/or do no more than link the use of the abstract idea to a particular technological environment or field of use, see MPEP 2106.05(h), and therefore, do not integrate retrieving data utilizing a mathematical algorithm into a practical application, see MPEP 2106.04(d).
With respect to “execute the temporal logic stage after the inference mapping stage if the inference mapping stage fails to identify the entity, the data warehouse mining stage after the temporal logic stage if the temporal logic stage fails to identify the entity, and the machine-learning model stage after the data warehouse mining stage if the data warehouse mining stage fails to identify the entity”, it merely describes automation or implementation of the abstract idea and, therefore, is not sufficient to provide a practical application (MPEP 2106.05(f)).
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception, itself because the additional elements do no more than automate or implement retrieving data utilizing a mathematical algorithm and do not improve computer functionality or improve another technology or related technical field, see MPEP 2106.05(a).
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-7 and 9 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement.
Lack of Algorithm
Claim 1 recites “execute the entity discovery model …, wherein the plurality of discovery stages comprises: an inference mapping stage that queries a datastore to match …; a temporal logic stage that correlates historical alert datasets …; a data warehouse mining stage that queries a remote data warehouse … to heuristically match and filter data records … to retrieve …; a machine-learning model stage that inputs …, wherein the output is probabilistic because the selection is based on the predicted probability; …”. And, while para 21 (PGPub) recites “The term “stage” or “discovery stage” refers to computational logic that specifically programs the computer system 110 to perform one or more operations”, it does not describe what “an inference mapping stage that queries”, “a temporal logic stage that correlates”, “a data warehouse mining stage that queries” and “a machine-learning model stage that inputs” comprise. Therefore, Applicant has not provided the algorithm or steps/procedure taken to perform “queries a datastore to match”, “correlates historical alert datasets”, “queries a remote data warehouse … to heuristically match and filter data records … and to retrieve …” and “inputs …, wherein the output is probabilistic because the selection is based on the predicted probability” in sufficient detail so that one of ordinary skill in the art would understand how Applicant intended the functions to be performed, see MPEP 2161.01 (I).
Dependent claims 2-7 and 9 are also rejected under 35 USC 112(a) as being dependent on rejected parent claim 1.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-7 and 9 are rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Lack of Antecedent Basis
Claim 1 recites “a machine-learning model stage… wherein the output…”. There is insufficient antecedent basis for these limitations in the claim because it is not clear to a POSITA what “the output” refers. As such, the claim is properly rejected as being indefinite.
Means Plus Function
Claim 1 recites "execute the entity discovery model …, wherein the plurality of discovery stages comprises: an inference mapping stage that queries a datastore to match …; a temporal logic stage that correlates historical alert datasets …; a data warehouse mining stage that queries a remote data warehouse … to heuristically match and filter data records … to retrieve …; a machine-learning model stage that inputs …, wherein the output is probabilistic because the selection is based on the predicted probability; …”. The PGPUB ¶ 21 recites “The term “stage” or “discovery stage” refers to computational logic that specifically programs the computer system 110 to perform one or more operations”. The issue is that while the specification defines a “stage” (e.g.: inference mapping, temporal logic, data warehouse mining and machine-learning model stages disclosed in claim 1) as a “computational logic”, it “fails to clearly link or associate the disclosed structure, material, or acts to the claimed function”, see MPEP 2181 III 3. To one of ordinary skill, “Computational logic is the use of computers to establish facts in a logical formalism” (see Paulson, Lawrence C. "Computational logic: its origins and applications."). Therefore, there is a disconnect for the one of ordinary skill between “use of computers” description of “computational logic” and Applicant’s definition in the specification because the specification does not link or associate “computational logic” with “the disclosed structure, material, or acts to the claimed function”.
Relative Terminology
Claim 1 recites “an inference mapping… which is more deterministic than subsequent stages based on direct matching…”, “a temporal logic stage… which is less deterministic… more deterministic…”, “a data warehouse… to heuristically match … which is more probabilistic than the temporal stage because of potential ambiguity…”. PGPUB recites at para. 40 “earlier stages may be more deterministic and less probabilistic than later stages”, at para. 25 “successfully matching the first acquirer entity identifier with the second acquirer entity identifier”. However, each merely describes a relative terminology associated with inference mapping, matching, temporal logic stage and heuristically match and not what they are. Therefore, the terms are relative as “If the specification does not provide some standard for measuring that degree, a determination must be made as to whether one of ordinary skill in the art could nevertheless ascertain the scope of the claim (e.g., a standard that is recognized in the art for measuring the meaning of the term of degree).”, see MPEP 2173.05(b)(I).
Dependent claims 2-7 and 9 are also rejected under 35 USC 112(b) as being dependent on rejected parent claim 1.
Conclusion
Reference made of record, not relied upon, pertinent to Applicant’s disclosure, includes:
US 20220215332 A1 (Kwok) disclosing using machine learning to predict impacts to a supply chain by analyzing current events.
Paulson, Lawrence C. "Computational logic: its origins and applications." Proceedings of the Royal Society A: Mathematical, Physical and Engineering Sciences 474.2210 (2018): 20170872.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/BROCK E TURK/Examiner, Art Unit 3692
/CALVIN L HEWITT II/Supervisory Patent Examiner, Art Unit 3692
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